WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Montag Divulgaçao Ltda. v. Robert Szegedy / 1 & 1 Internet, Inc.
Case No. D2010-1533
1. The Parties
The Complainant is Montag Divulgaçao Ltda., of Centro-Santos Sao Paulo, Brazil, represented by Wilson Silveira e Associados - Advogados, Brazil.
The Respondent is Robert Szegedy, of Walnut Creek, California, United States of America and 1&1 Internet Inc., Chesterbrook, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The Disputed Domain Name <pele.com> is registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 10, 2010. On September 10, 2010, the Center transmitted by email to 1&1 Internet AG. a request for registrar verification in connection with the Disputed Domain Name. On September 13, 2010, 1&1 Internet AG transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 14, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 14, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 6, 2010. The Respondent’s e-mail communication in lieu of formal Response was filed with the Center on October 5, 2010. (The Panel is satisfied that the Respondent has been given fair opportunity to submit a Response, and has apparently elected not to submit a substantive reply to the Complaint.)
The Center appointed Alistair Payne as the sole panelist in this matter on October 19, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On November 3 the Panel issued a Panel Order requesting further evidence from the Complainant concerning its ownership of registrations for the PELE trademark and providing Respondent with an opportunity to submit a reply. The Complainant submitted its further evidence by the due date of November 10, 2010. The Respondent submitted no further comments or submissions.
4. Factual Background
The Complainant owns or has rights to manage various PELE trademark registrations and intellectual property rights in a range of countries worldwide and in particular owns Community Trademark registrations 3367943 and 372242 for the PELE word mark.
The Disputed Domain Name was first registered on April 26, 1995.
5. Parties’ Contentions
The Complainant submits that it has since July 2008 taken over the ownership or management of rights in the PELE trademarks from Glory establishment Limited. It says that the PELE name and trademark is synonymous with the famous football player of the same name who was one of the greatest players ever and who was responsible for the golden era in Brazilian football and is famous generally in the football community and in various countries throughout the world.
It says that it has since 2009 made numerous trademark applications incorporating the trademark PELE in various countries including Brazil and the United States of America. The Complainant further asserts that it has rights to manage the registered trademark rights for PELE in various other countries including Swaziland, Lesotho, Algeria, People’s Republic of China, Peru and Zimbabwe the earliest of which dates from 1996. In addition it has recently taken assignments of a range of trademarks for the word mark PELE including Community Trademark registrations 3367943 and 372242 which were filed as early as 1996.
The Complainant submits that it has never licensed or authorised the Respondent to use the PELE trademarks and has never had any association with the Respondent. It says that to its knowledge the Respondent is not known and does not use the name or trademark PELE. Further the Complainant notes that the Disputed Domain Name resolves to a website homepage with an "under construction" message and the front page displays the message "website for sale” and redirects the website to “www.valuate.com”. which is an appraisal tool for determining the sale value of domain names. Accordingly the Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
As far as bad faith is concerned the Complainant submits that based on the reputation attaching to the PELE name and trademark, it is obvious in the circumstances that the Respondent registered the Disputed Domain Name as a top level domain for commercial gain. It says that the notice advertising the website for sale is indicative of the Respondent’s intention to sell the Disputed Domain Name for commercial gain and even if this was not the case it is apparent that the Respondent is exploiting the PELE trade mark and name for direct or indirect commercial purposes.
The Respondent forwarded an e-mail to the Centre instead of a formal Response. The Respondent’s e-mail concerned timing and administrative matters and failed to address any of the substantive elements of the Policy.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that at the date of the filing of the Complaint it owned or had rights in various trademarks for PELE, including in particular Community Trademark registrations 3367943 and 372242 for the PELE word mark. This trademark is identical to the Disputed Domain Name for the purposes of the first element of the Policy. Accordingly the Complaint succeeds in relation to the first element of the Policy.
B. Rights or Legitimate Interests
The onus is upon the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain name and it is then for the Respondent to rebut the Complainant’s prima facie case.
There is nothing to suggest that the Complainant has ever authorized the Respondent’s use of the Disputed Domain Name or had any prior relationship or contact with the Respondent. There is no indication before the Panel of the Respondents use of PELE in relation to bona fide commercial activities. The only use that the Respondent appears to be making of the Disputed Domain Name is in relation to the website to which it resolves which is a kind of place keeper site and which also featured at the time that the Complaint was made an indication that it was for sale. The Respondent has failed to rebut this case and there is no indication on the face of the evidence before the Panel of the Respondent having any rights or legitimate interests in the Disputed Domain Name. As a result the Complaint succeeds in relation to the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel notes that the footballer “Pele” is very well known if not famous in a number of countries and particularly in Latin America. “Pele” has authorised the Complainant and its antecedents from at least as early as 1996 to register and manage identical trademarks for the purposes of licensing products and commercializing the PELE name and mark. Even though the Disputed Domain Name was registered by the Respondent, who is now based in the United States of America, in 1995 the Panel infers that because of the reputation attaching to Pele’s name the Respondent must have been aware of the footballer and on the balance of probabilities registered the Disputed Domain Name because of the footballer’s repute. This inference is only reinforced by the indication on the Respondent’s website that the website (and presumably Disputed Domain Name) was for sale and by the Respondent’s failure to provide any explanation for its registration and use of the Disputed Domain Name to resolve to a holding site. The Panel notes that previous panels have found that where a respondent is clearly aware of the complainant’s name or trademark rights and that the aim of the domain name registration was to take advantage of the complainant’s reputation and goodwill in existence at that date then bad faith may be found even where the Disputed Domain Name was registered prior to the complainant obtaining registered trademark rights. For example see Kangwon Land, Inc v. Bong Woo Chun (K.W.L. Inc), WIPO Case No. D2003-0320 and Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916.
In circumstances where a domain name has not been actively used then panels have still been prepared to infer bad faith in appropriate circumstances. (Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003. In this case the PELE name and mark is well known, there is an indication from the website to which the Disputed Domain Name resolves that the Respondent was inviting offers for purchase of the Disputed Domain Name and in addition the Respondent failed to provide any explanation for its registration or use of the Disputed Domain Name. In these circumstances the Panel infers that the Respondent intended to profit from the Disputed Domain Name and that it therefore has used the Disputed Domain Name in bad faith.
Accordingly the Panel finds that the Respondent has both registered and used the Disputed Domain Name in bad faith and the Complaint therefore succeeds in relation to the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <pele.com> be transferred to the Complainant.
Dated: November 30, 2010